Registering proper names as trademarks is an increasingly common practice when there is a clear public projection or potential future commercial use.
Victoria Beckham's trademarking of the names of her children with the Beckham marriage highlights the tensions between the right to a name and the right to trademarksas well as the legal limits of this type of strategy.
Based on this case, we spoke with Cristina VelascoSenior Associate in the area of Brands en elzaburu, regarding the legal treatment of proper names as trademarks, the scope of trademark protection, and the existing legal avenues in case of conflict.
Should a proper name be treated the same as any other trademark?
A proper name cannot be equated with a trademark. While A trademark is a distinctive sign intended to identify a company's products or services in the market compared to those of its competitors, The name constitutes an attribute of personalityA trademark, whose function is to identify a natural person in legal transactions and within society, has a commercial purpose, unlike a legal name, whose purpose is strictly identification.
In this case of the BeckhamSince it is a European Union trademark, European regulations apply, as well as the national regulations of the Member States. The United Kingdom (where the family resides), following its withdrawal from the EU through Brexit, is no longer part of this regulatory framework. Therefore, any potential protection of the legal name against a European Union trademark would have to be addressed through the domestic legislation of one or more Member States. In the case of Spain, such protection is expressly provided for in Articles 9.1.a) and 9.1.b) of Law 17/2001, of December 7, on Trademarks, which prohibit the registration of signs that reproduce or imitate a person's legal name without proper authorization.
Can the legal owner commercially exploit the trademark without the consent of the child when they reach the age of majority?
If the brand consisting of the child's name has registered without his express consent and he has not tolerated its use for an uninterrupted period of five years in the European Union, you may validly request your annulment before the EUIPO, pursuant to Article 60.2(a), in conjunction with Article 60.3, of Regulation (EU) 2017/1001.
Now, if the son I would not have given my consent, but I would have tolerated the use of the trademark for certain products (for example, clothing in class 25) for five consecutive yearsthen it would be more complicated to request an annulment for those products, since it should be possible to demonstrate that the trademark application was filed in bad faith.
Finally, it should be noted that Trademark law is limited by the principle of specialtyTherefore, licenses can only be granted for the products or services for which the trademark is actually protected. Consequently, if the trademark is not registered for certain categories of products or services, it would not be possible to license its use in relation to them.
Is it preferable to negotiate a transfer or to challenge the registration?
Everything will depend on the specific case and, in particular, on whether there was express consent from the child at the time of registration or tacit consentwhich could be seen when the trademark has been used continuously for more than five years for certain products, with the son's knowledge and without his opposition during that period.
Indeed, it could request the expiration of the trademark if more than five years have passed since its registration without it having been used for all or part of the products or services for which it was granted in the relevant territory (in this case the European Union).
What is the difference between “protecting” a child’s name and appropriating it as a brand?
From the moment that When a name is registered as a trademark, the existence of a commercial interest is presumed.As we have indicated, the purpose of a trademark is its use in economic transactions to distinguish the products or services of one company from those of others. If there is no commercial purpose, it is pointless to seek trademark protection because, after five years from its registration, the trademark becomes vulnerable due to lack of use and any third party could request its cancellation.
This type of case illustrates how the strategic management of intangible assets, such as the name, image and brand, requires a prior and rigorous legal analysis, aimed not only at protection against third parties, but also at preventing future conflicts.
